2014

January 16 summaries

A copyright infringement claim was barred when it was brought more than three years after the date on which the plaintiff should have become aware of an act of infringement, despite plaintiff's arguing a "continuing wrong" exception.

When a trademark holder alleged that a competitor wrongly imported and marketed mushrooms under its marks, the competitor's importation of its mushrooms was likely to confuse consumers under the Lanham Act despite no evidence of actual confusion.

The court may award reasonable attorney fees in patent infringement cases with exceptional circumstances; a clear and convincing evidence standard applies to the inquiry of whether fees will be awarded.

The Digital Millennium Copyright Act's "safe harbor" provision did not apply when the alleged infringer was aware of facts from which infringing activity was apparent. If awareness was derived from viewing an infringing work, the infringement must be "objectively obvious."

A reseller may be liable for trademark infringement if the reseller uses the trademark in a way that is likely to cause the general public to think the reseller is working in conjunction with the trademark owner.

The design of a useful article is copyrightable only to the extent that it incorporates sculptural features that can be identified separately from, and are capable of existing independently of utilitarian aspects of the container.

Where a party objects to the disclosure of information on the grounds that it is a trade secret, the trial court must determine if the information is in fact a trade secret, and secondly, if the information is protected the requesting party must show a reasonable necessity for the information.

The visual distinctions between the drawing in the design patent application and the allegedly infringing lighter design demonstrated that, as a matter of law, the challenged lighter design was non-infringing.

Apple’s method of communicating changes in its devices’ registry of applications capable of receiving push notifications to a network did not infringe Motorola’s patent covering a method of communicating changes in the registry of installed applications to a network.

Because Western Digital’s MyBook hard drives and Sling Media’s Slingbox did not ship with the software required to enable native processing of Java programs, they did not infringe Nazomi’s patents directed toward a hardware-software combination capable of directly running Java programs.

Uncontroverted sale of counterfeit trademarked articles alone established infringement against corporate defendants but, without proof of willfulness on the part of individuals, did not establish infringement against individually named defendants.

Trial court orders for production of material containing trade secrets were found to be an abuse of discretion because the party seeking production had not met their burden of proving that nonproduction constituted a real threat of an unjust result.

Area(s) of Law:

Trade Secrets

, Production

February 10 summaries

Although personal names used as trademarks are generally regarded as descriptive terms, the court found that they are protected if, through usage, they acquire distinctiveness and a secondary meaning. Because a name was found to be protected, the onus was on the second person trying to use it to avoid mistake.

Literal infringement was not found when the accused method did not practice each limitation in the asserted claim. Further a statement by an expert pertaining to patent validity was insufficiently probative of the issue of infringement under the doctrine of equivalence.

Claims are construed under the term’s plain and ordinary meaning as understood by a person or ordinary skill in the art unless: 1) patentee defines and acts as own lexicographer, or 2) patentee disavows the full scope of a claim in specification or prosecution.

The definition in Butamax’s patent specification stating that the KARI polypeptide used a specific an electron donor did not mean that Butamax was acting as its own lexicographer and intending to limit the term to only cover use of the specific donor when both it and an alternate donor were within the ordinary meaning of the term at the time the patent was issued and where both the preferred embodiment and Enzyme Commission number listed in the patent permitted either electron donor to be used.

To the extent capitation rates constitute trade secrets, that information may be redacted in accordance with the Trade Secrets Act which protects against misappropriation of trade secrets, including disclosure without consent.

Lighting Ballast's argument that the assessment of expert testimony and other factual questions, which are often raised during claim construction, justified a more deferential standard of appellate review did not provide a compelling justification for abandoning the current de novo standard applied to claim construction appeals.

There is a circuit split as to what actions meet the "preregistration" requirements found in the copyright act. However, under either test, a copyright holder must show some evidence that they have either registered or commenced registration procedures before they may bring a suit for copyright infringement.

Even though Mr. Kirby did not personally profit from disclosure of a trade secret, under Utah trade secret law, damages for the use or disclosure of trade secret may be measured by the defendant’s unjust enrichment, actual loss suffered by the plaintiff, or a reasonable royalty based on the price that the parties would have agreed upon for a license.

To overcome the strong presumption of validity that Lovely Skin's registered trademark had not acquired distinctiveness at the time of registration required Ishtar to show more than evidence of third parties with similar business names and marks.

When Worlds, Inc. submitted its patent applications, it did not contain the required reference to its earlier filed provisional application and was not entitled to the priority date of the provisional application. Without that earlier priority date, Worlds invention was in public use more than one year before the priority date of its patent.

When Barr challenged Alcon's patent, it did not show with clear and convincing evidence that a person of ordinary skill in the art could not practice the claim without undue experimentation, which is required to prove lack of enablement.

In order to prove a claim of copyright infringement, plaintiff must have a valid copyright and sufficiently show the defendant’s copying of original components of the work. Further, to demonstrate copying, plaintiff must show that the infringer had access to the copyrighted work and that the works at issue are substantially similar.

A sentencing enhancement under U.S.S.G. § 3B1.3 was proper because defendant had skills in the area of circumvention technology that “[m]ost persons of average ability” with “a minimum of difficulty” could not replicate.

Although the facts used by the jury to conclude that Marvell willfully infringed Carnegie's patents also satisfied many of the Reed factors the size of the jury’s damage award in relation to Marvell’s market capitalization and cash reserves justified limiting the enhanced damages multiplier to 1.23.

Patentability and Indefiniteness: A method that manipulates or reorganizes data is merely an abstract idea that is not subject to patentability. In applying an idea to a specific machine, the term "interactive interface" requires some standard to avoid being too indefinite and losing patent protection.

When two works are substantially similar the court may grant summary judgment if when viewing evidence in the light most favorable to the non-moving party they can draw inferences from the evidence presented that reasonable jurors could not find a substantially similar idea or expression.

Patent Infringement: The obviousness-type double patenting doctrine prohibits a patent owner from extending their exclusive use right through a later-expiring patent that is not patentably distinct from the earlier-expiring patent.

A nonexclusive license may be granted orally or implied from conduct. An implied license is created when (1) a licensee requests creation of a work; (2) the licensor makes that work and delivers it to the licensee; and (3) the licensor intends that the licensee copy and distribute the work.

Trade Secrets: Preliminary Injunction: An idea may still be held to be a trade secret, despite not being written down or having written design plans, if a sufficiently detailed description of the design is provided to others.

June 10 summaries

In patent infringement cases, the award of attorneys' fees is reserved for “exceptional cases”; if the infringement is premised on operations that are outside of the United States, the claim cannot be successful and is likely subject to an award of attorneys’ fees.

To satisfy the element of "use" of a trade secret, actual use may be inferred when a former employee quickly develops software for a competing company; the code does not have to be found in the competing software, as it can still be used as a roadmap for development.

Patent infringement analysis involves two steps: (1) the threshold construction of the meaning and scope of the asserted claim, followed by (2) a determination of whether the accused product infringes the properly construed claim. If no reasonable jury could possibly find that an accused product satisfies every claim limitation of the asserted claims, either literally, or under the doctrine of equivalents, then summary judgment of noninfringement must be granted.

July 5 summaries

To prevail on a claim for trademark infringement under the Lanham Act, Section 43(a), a plaintiff must prove: (1) ownership of a valid trademark; (2) use of the mark without its consent; and (3) that such use is likely to cause confusion. Even without a valid trademark registration, a trademark infringement plaintiff may still demonstrate superior rights to a trademark by establishing that it was the first user of the mark in commerce, however, such prior use must be “continuous,” and not merely “transitory.”

PATENTS: PERMANENT INJUNCTION: The detrimental effect of restricting innovation combined with the public’s general interest in protecting inventive technology property outweighs any public interest in purchasing cheaper products from an infringing party.

Copyright: An affiliate of a third party website is not liable for copyright infringement when it neither copied the image, stored the image, had general or specific knowledge of the infringement, nor exerted control over the infringing party.

In a Misappropriation of Trade Secrets claim, the Plaintiff bears the burden of proving the specific nature of the trade secrets. Trade secret law does not protect an idea which is well known or easily ascertainable; the secret information must afford the owner a competitive advantage by having value to the owner and potential competitors; and the plaintiff must identify the trade secrets with specificity.

When a company uses a certification mark of another company in order to advertise training of the service registered under that mark, the Court applies a two-prong test to determine if there is trademark infringement.

When there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

September 7 summaries

When two parties use a federally registered mark, under common law, ownership of the mark (regardless to whomever registered the mark) will be granted to the first party who actually uses the mark in the market place.

When a patent holder can show that there is likely an irreparable harm sustained by the patent holder by applying the ordinary observer test, then a temporary restraining order may be granted by the Court.

Determination of a claim of infringement involves a two-step inquiry. First, the patent claim is construed—a question of law in which the scope of the asserted claim is defined. Second, the claim is compared to the allegedly infringing product to determine whether the product contains every limitation contained in the claim or the substantial equivalent of any limitation not literally present.

Area(s) of Law:

Patents

October 0 summaries

November 11 summaries

To prove trademark infringement, a plaintiff must show that (1) its marks are distinctive enough to be worthy of protection and (2) the defendant’s use of those marks is likely to cause consumers to be confused as to the source of the product.

A preliminary injunction may be granted if the movant demonstrates (1) a likelihood of success of the underlying case; (2) irreparable harm without an injunction; (3) the injunction will not impose greater harm on the nonmovant; and (4) the injunction is not adverse to the public interest.

Where there is a question about whether there is substantial similarity between two ideas in a copyright infringement case, the case cannot be decided at the summary judgment phase. It must be decided by a jury.